Making intellectual property work for business - World Intellectual ...

Setting up IP services | Setting up an intellectual property unit
Establishing IP
as a strategic
issue for the
organization
Defining
the strategic
orientation,
budget and
services
16 Making intellectual property work for business
The most important – and sometimes the most challenging – step is establishing IP
as a priority within the organization. IP may not be a familiar subject to a business
membership organization’s management and the first step may be to explain why IP is
important to businesses and to the organization. An overview of general IP concepts
and arguments can be found in the introduction to this guide to help in this process.
Identifying IP as a strategic issue for the organization will ensure that the necessary
human, financial and institutional resources are available for the project. In this initial
phase, support from senior management and the board of directors is paramount to
secure and maintain project funding and resources. Designating a board member to
supervise the project’s progress could be one way of securing the engagement of the
organization’s leadership. Having established managerial support and secured the
necessary resources, the next step is to design the IP unit.
Linking the IP unit to an area in the organization that is directly related to companies
will focus the unit on the business aspects of IP and ensure that IP issues are integrated
into the business membership organization’s general business advice and
services. The IP unit should not be an isolated unit in the organization, but rather be
integrated within a larger department. IP is much more than a legal issue and the unit
does not necessarily have to be created within the legal department, though this may
be a viable option. Whichever department it falls under the IP unit should draw from
and feed into the work of other departments. One way to foster interdepartmental
cooperation is to initiate internal communication on the existence and objectives of this
new business area.
Strategic orientation
Before making decisions or planning activities, the business membership organization
should analyse what it has already attempted or achieved in terms of IP, and then
decide how to build on this and position itself. Identifying the competitive advantages
of the business membership organization as a service provider and social stakeholder
is crucial to formulating the unit’s strategic orientation. Understanding the division of
responsibilities and the attribution of roles between stakeholders like national patent
offices, patent and trademark attorneys, universities and technological/development
agencies, will provide insights into market areas the organization may be able to exploit.
Roles of different IP professionals
The core competence of patent and trademark offices is generally registration and
IP database searches, while for innovation agencies it is promoting innovation and
providing funds. Patent and trademark agents/attorneys advise companies and
conduct patent and trademarks filings, deal with IPR disputes and enforcement.
IP licensing professionals and IP valuation experts have their own distinct domain
of expertise. Franchising experts should be well versed in some aspects of IP
management, notably trade secrets and trademarks. Another distinct category of
professionals includes different types of IP information specialists who specialize
in the searching and analysis of patent and trademark databases. There are many
more categories of IP experts who are required to also have expertise in a domain
other than IP such as accounting, insurance, risk management, taxation, etc.
By knowing what services are being offered and by whom, the business membership
organization can evaluate the relevant IP stakeholders to identify a market niche
and to create a suitably strong network of partners. As most IP services provided by
public sector institutions focus on patents and hardly address the management of IPRs,
private service providers, like business membership organizations, have an interesting
“gap” to exploit by creating specialized services in IP asset management and informal